It has been a while since I’ve taken an in-depth look at the first-to-file provisions of the America Invents Act. This interesting fact pattern comes from Andrea Levesque, IP Counsel at ARC Energy, and relates to the interference provisions that survive the general March 16, 2013 effective date of the first-to-file provisions.

The March 16, 2013 Effective Date 

As I wrote previously, one of the more complex aspects of the America Invents Act relates to the effective date and applicability of the first-to-file provisions of new 35 USC § 102. As a general rule, applications with any claim that has an effective filing date on or after March 16, 2013 will be subject to the new version of § 102. On the other hand, applications with any claim that has an earlier effective filing date still will be subject to the current versions of 35 USC §§ 102(g), 135 and 291:

INTERFERING PATENTS.—The provisions of sections 102(g), 135, and 291 of title 35, United States Code, as in effect on the day before the effective date set forth in paragraph (1) of this subsection, shall apply to each claim of an application for patent, and any patent issued thereon, for which the amendments made by this section also apply, if such application or patent contains or contained at any time—
(A) a claim to an invention having an effective filing date as defined in section 100(i) of  title 35, United States Code, that occurs before the effective date set forth in paragraph (1) of this subsection; or
(B) a specific reference under section 120, 121, or 365(c) of title 35, United States Code, to any patent or application that contains or contained at any time such a claim.

This means that certain CIP applications could be subject to both the first-to-file provisions of new § 102 and the interference provisions of current §§ 102(g), 135 and 291. This complicated effective date appears to provide an important safeguard for a first inventor who files his application before March 16, 2013 but after a subsequent inventor files his own application, but the safety net may not be fail safe.

The Scenario

Independent Inventor B invents the Invention first
Independent Inventor A files Patent Application A that describes the Invention
Independent Inventor B files Patent Application B that claims the Invention
~~~~~March 16, 2013~~~~~
Independent Inventor A files a CIP application that claims the Invention and an Improvement

The First-To-Invent Issues

Application A and Application B both will be subject to the current version of § 102 because they are filed before March 16, 2013.

If Application A describes but does not claim the Invention, Application A could be cited as prior art against Application B under § 102(e).  Inventor B could swear behind Application A by proving an earlier date of invention.

If Application A claims the Invention, an interference could be declared between Application A and Application B.  Inventor B could defeat Inventor A by proving an earlier date of invention.

The First-To-File Issues

Assuming that no interference is declared between Application A and Application B, Inventor A could pursue claims to the Invention in the CIP Application. The CIP Application will be subject to the new version of § 102 because it includes at least one claim with an effective filing date after March 16, 2013 (the claims to the “Improvement”).

Any claims directed to the Invention will be accorded an effective filing date of Application A, and so Application B (filed after Application A) will not be prior art against those claims. 

(Claims directed to the Improvement will be accorded an effective filing date of the CIP application, and so both Application A and Application B will be prior art against those claims.)

Thus, looking only at the first-to-file provisions of new § 102, the CIP could provide a vehicle for Inventor A to avoid the effect of Inventor B’s prior invention of the Invention.

The Interference Issues

Luckily for Inventor B, the CIP application still will be subject to current §§ 102(g), 135 and 291. This means that Inventor B still could defeat Inventor A in an interference by proving an earlier date of invention. 

The Hole In The Safety Net

While 35 USC §§ 102(g), 135 and 291 protect Inventor B from losing an interfering application or patent to Inventor A, they do not prevent Inventor A from obtaining a patent to the Invention under all circumstances. For example, if Application B is abandoned before the CIP is examined, there would be no interference, and the CIP could be granted with claims directed to the Invention.

Strategic Implications

This fact pattern has several strategic implications. For example:

  • Applicants in Inventor B’s position may want to monitor the status of earlier-filed applications cited against it (such as Application A) for related applications filed on or after March 16, 2013.
  • Applicants in Inventor A’s position may want to consider filing a CIP application on or after March 16, 2013, in order to be in a position to obtain a patent if Application B is abandoned.
    (Do Applicants identify where their own applications are cited against someone else?)

This is just one example of the complicated scenarios and strategic opportunities arising from the transition to a first-to-file patent system. Altlhough March 16, 2013 is still more than one year off, stakeholders would do well to start planning and preparing now.